A trademark can be defined as a sign which is used, or is intended to be used, for distinguishing goods or services dealt with or given in the course trade by a person from goods or services dealt with or given in the course of  trade by another person. Trademark registration is handled by the Vanuatu Intellectual Property Office (VIPO) in accordance with the Vanuatu Trademarks Act 2003, which came into effect on 8th February 2011 and forms the legal basis of trademark registration.

Types of Marks Eligible for Trademark Registration in Vanuatu

A trademark may be registered for:

• Goods; or
• Services; or
• Both goods and services
• Generic Mark
• Descriptive Mark
• Suggestive Mark
• Fanciful Mark

Ineligible Marks

• The Regulations may enumerate the signs that aren’t being used as a trademark or part of the same.
• Already registered trademarks
• In the case of an unregistered trademark being used in good faith; immediately before the publication of the regulations in the Gazette.
• A trademark that can't Be represented graphically
• A trademark that doesn't distinguish Applicant's Goods or Services
• The trademark is Scandalous or Its Use Contrary To Law
• Trademarks likely to deceive or cause identical confusion trademarks

Key Considerations before Choosing a Mark for Trademark Registration in Vanuatu

• A term that is considered a generic mark should not be chosen as a trademark as the generic terms are not protectable.
• A descriptive mark can be chosen, but the rule is that descriptive marks, geographic terms, and personal names must have an established secondary meaning in consumers' minds in order for approval to be granted.
• The suggestive and arbitrary marksare considered inherently distinctive, with their eligibility being determined by whoever is first to register or first to use.
• It is recommended to opt for fanciful marks as a fanciful mark is the strongest protectable mark.

necessary papers Required for Trademark Registration in Vanuatu 

The necessary papers required for Trademark Registration in Vanuatu are enlisted below -

• Cover letter
• Complete application (S 16 App. Form)
• Sample of trademark
• Power of Attorney
• Receipt of payment (confirmation of payment made to the account)

Procedure for Trademark Registration in Vanuatu 

The below-mentioned procedure must be followed for trademark registration in Vanuatu.

Filing the Application

The applicant must file the application along with the requisite necessary papers

Key Considerations before Filing the Application

The applicant must consider the following before filing an application for trademark registration –

 The application for trademark registration for goods and/or services can be filed only if 

(a) the person claims to be the owner of the trademark; and

(b) the person:

(i) is using or  has the intention of using  the trademark for the goods and/or services; or

 (ii) has authorization  or intends to  give authorisation to  another person  for using the trademark for the goods and/or services; or

(iii) the person has an intention of assigning the trademark to a body corporate that is about to be constituted.

(2) The application must:

(a) be as per the approved form and be filed with the Registrar; and

(b) inclusive of  a representation of the trademark; and

(c) Provide a description of the goods and/or services involved.

(3) If the relations between 2 or more persons interested in a trademark are such that none of them is entitled to use the trademark except

: (a) on behalf of all of them; or

(b) for goods and/or services with which all of them are connected in the course of trade; they may apply for its registration together.

Examination

The examination is conducted to determine 2 aspects, i.e.

• applicant's adherence to the prescribed Act and
• The existence of any grounds for rejection of the Application

If the application is in accordance with the Act and there aren't any grounds for rejecting the application it shall be accepted and the registrar shall proceed to the next step in the trademark registration process; otherwise, it shall be rejected

Publication

Upon the successful completion of the examination, the trademark application shall be published in the official Gazette within 28 days post the filing of the application.

Opposition

Any party intending to oppose the application can file the opposition within 28 days from the date of publication and if there isn't any opposition within the prescribed timeline the competent authority shall proceed to the final step of trademark registration.

Issue of Registration Certificate

 The final step in the process of trademark registration in Vanuatu is the issue of a Registration certificate which shall be sent to the local agent.

Priority

Vanuatu is not a member of the Paris Convention, but the applicant can still claim priority if  

1. a person has filed an application for the registration of a trademark in one or more than one Convention country; and
2. within 6 months after the day on which that application, or the first of those applications, was made, that person or the person's successor in title applies to the Registrar for the registration of the trademark for some or all of the goods and/or services for which registration was needed in that country or those countries; that person or that person's successor in title may, at the time of filing the application, claim priority for the registration of the trademark for any or all of those goods and/or services.

Term of Protection and Renewal

The trademark registered in Vanuatu is protected for a term of 10 yrs. The aspects regarding the renewal of registration are discussed below –

Renewal before the Expiration of Registration

The applicant shall file the application for renewal of the registration 3 months prior to the expiration of the registration. Registrar must renew the registration for a period of 10 years from the day on which the registration of the trademark would be expiring if it were not renewed.

The Registrar must serve a notice of the renewal to the registered owner of the trademark.

Failure to Renew

If the registration of a trademark is not renewed-

• The registration ceases to have an effect upon expiration; and
• Result in the removal of the trademark from the Register 12 months after the day on which the registration expired by the Registrar Renewal within 3 Months after the expiration of  Registration
• If, within 3 months after the registration of a trademark has expired, a person requests for the renewal of trademark registration, the Registrar must renew the registration of the trademark for 10 years from the day on which the registration expired.
• The request must be in the approved form and be filed with the Registrar.

 

 

Frequently Asked Questions

Which authority deals with trademark Registration in Vanuatu?

The Vanuatu Intellectual Property Office (VIPO) deals with Trademark Registration in Vanuatu in accordance with

Which law deals with Trademark Registration in Vanuatu?

The Vanuatu Trademarks Act 2003 deals with Trademark Registration in Vanuatu.

Can priority be claimed for trademark registration in Vanuatu?

Yes, priority can be claimed by the applicant despite the fact that Vanuatu not being a member of the Paris Convention priority if a person has filed an application for the registration of a trademark in one or more than one Convention country; and within 6 months after the day on which that application, or the first of those applications, was made,

What is the term of protection of trademark in Vanuatu?

The trademark registered in Vanuatu is protected for a term of 10 yrs.

What happens if the entrepreneur fails to get the registration renewed?

If, within 3 months after the registration of a trademark has expired, a person requests for the renewal of trademark registration, the Registrar must renew the registration of the trademark for 10 years from the day on which the registration expired.